Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Neil J. Wilkof, Annsley Merelle Ward, Nicola Searle, Eleonora Rosati, and Merpel, with contributions from Mark Schweizer. Read, post comments and participate! E-mail the Kats here

The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

4. McDONALD'S ($100 million profit slump, following adverse publicity for its killer foods and the warm reception given to the critically acclaimed film Super Size Me)

5. MANCHESTER UNITED (whose sponsor, VODAFONE, is listed at no. 31; now that's a message ...)

6. NOVON (er, there seem to be a few Novons around and they're all different)

7. LIDL (more cheap shopping)

8. TINY (low-cost PCs)

9. SNACK-A-JACKS (as the name suggests, a snackable comestible)

10. THE SUN (a sensationalist downmarket newspaper)

The IPKat notes that, despite the fact that they are hated and despised by so many consumers, all of these brands are extremely successful, commercially. Some brands must of necessity be hated. For example, if you are a Manchester United supporter, you'll love that brand, but you'll probably be nursing a hostile feeling towards it if you support another football team. Others appear to be the result of a sort of self-loathing: people don't like to feel they have to shop for bargains, so they go to Lidl or QVC but lose their self-respect; some of this loss, by transference, affects the brands they patronise. This may be because branding is about choice but an economy-shopper's purchases are determined by need, not choice.

The Scotsmanreports that, after widespread public protest, the Little Chef chain of restaurants has abandoned plans to replace the portly chef who appears in its logo with a slim and trim version (see The IPKat, 17 Aug 2004).

The IPKat is a bit suspicious of all these plans to change logos which end up being scrapped. His cynical side wonders whether such plans are just designed to focus the public’s attention on brands which are past their prime so that consumers will realise that, although they do not purchase or use these brands very often, they are in fact national institutions that would be missed if they were gone.

The IPKat would like to bring two little gems from the New York Times to your attention.

Monday’s edition provides coverage of a new book criticising the patent system which has been published by an economics professor and a professor of investment banking. What interests the IPKat is that the criticisms do not stem from the nature of patents per se. Instead they lay the blame at the feet of administrative reforms to the US system, such as the introduction of the Federal Circuit for hearing patent cases and the fact that the USPTO has become self-funding. These reforms have had unintended consequences. For example, there is great time pressure on patent examiners, which means that patents cannot be examined properly. Also, patents are the subject of increasing amounts of litigation and it is the interests of the finite pool of patent attorneys to make sure that it keeps growing. Luckily though, the dynamic duo propose a solution involving getting more information into the hands of patent examiners and scrapping juries who aren’t well equipped to deal with complicated technical issues in patent infringement actions.

Meanwhile, Tuesday’s edition reports on a bill that is before the Senate which would introduce enhanced liability for the providers of P2P networks and anyone else who induces another to infringe copyright protected work. The bill has received a hostile response from the consumer electricals industry, who expressed the fear that the makers of photocopiers and iPods could be held liable under the bill. RIAA however has welcomed it. Mitch Glazier, senior vice president of RIAA has said (referring to the actions brought by RIAA against downloaders):

“We don't want them having American kids doing the dirty work for them.”

The IPKat isn’t surprised that RIAA supports the bill but suspects that RIAA’s newfound concern for the “kids” of America may be a result of the hostile press it got when bringing actions against individual downloaders earlier this year. The IPKat wonders whether this statement indicates that RIAA has had a change of strategy regarding its approach to individual downloaders.

More kids doing the dirty work hereMore problems with patents here, here and here

The IPKat's blogs attract very few posted comments, but he receives a lot of emails from people who don't want their comments to be attributed to them. One such interesting email (which has been anonymised for obvious reasons) is reproduced below. The author works for OHIM, the Community Trade Mark Office and Design Registry. His letter reads:

"Hi,

Since I discovered IPkat I very much enjoy reading it.

[...] One of your favorite issues is the problem of languages of CFI/ECJ cases. But you never mention BoA language problems. Did you know that all non-English language decisions of the Boards are internally translated into English? However, they are not published on OHIM's website. I suppose they are not published for political reasons (discrimination of other languages), which is nevertheless a pity. Maybe users should complain from time to time? [...]".

The IPKat has long been annoyed at the fact that many OHIM Board of Appeal and Opposition decisions are not posted on the OHIM website in English. Indeed, he has put his paw into his purse and paid a few deserving postgraduate students to translate them for him. Now he knows that Board of Appeal decisions are routinely translated but suppressed, he will be very much on his guard in future.

Can any IPKat reader who feels an OHIM Board of Appeal decision has been wrongly suppressed please let him know by email?

Search for OHIM Board of Appeal decisions here; Opposition Division decisions here; Cancellation Division decisions here; Community Design decisions here (note that only three of the 10 decisions listed here on 29 September were available in English).

Tuesday, 28 September 2004

The International Trademark Association (INTA) has recently released the volume 94, issue 4 (July/August) issue of its bimonthly publication The Trademark Reporter. Among the articles in this issue is the intriguing "Of Tartans and Trademarks" by Ross D. Petty, of Babson College's Marketing Faculty. Going back to pre-Jacobite times, Professor Petty examines tartans in terms of modern concepts such as trade mark use and secondary meaning, before concluding

"While the use of a clan tartan would appear to be aesthetically functional for traditional Scottish clothing such as kilts, the concept of aesthetic functionality is not well accepted, ... and it is inconsistent with the concept of a collective mark and should, therefore, not be applied to such marks".

The IPKat agrees that the concept of "aesthetic functionality" is a tough one to grapple with -- yet in the context of design right it is a notion that lies right at the heart of the question of how one identifies protectable subject-matter. In European trade mark terms too, we are coming to terms with the notion that the aesthetic/functional continuum ranges from (i) aesthetic but non-functional, (ii) aesthetic and functional to (iii) functional but not aesthetic. At times like this, conferring protection on the basis of broad principles of unfair competition rather than as a result of fine discrimination between types of subject-matter looks the best approach.

A snippet from The Daily Telegraph reports that the copyright infringement claim brought by Georges Lopez, the celebrity teacher in "Etre et Avoir" (see IPKat blog, 29 March 2004), has been dismissed by the French courts.

Monday, 27 September 2004

Ananova reports that residents of St Maurice in Switzerland have voted against a council suggestion they change their name so as to avoid confusion with St Moritz. Locals voted to keep the town's name as it is, because mistaken bookings bring a fortune into the local economy. St Maurice, Valais, is a military base and very different from the famous mountain resort in the canton of Graubuenden. Councillors had apparently received a number of complaints from Japanese tourists who ended up in St. Maurice instead of St. Moritz, but locals who took part in the vote organised by local councillors said they were happy to benefit from the image of their more famous namesake. A tourism spokesman confirmed:

"More than a few Japanese tourists have made their way here to Saint Maurice after thinking they were headed to St Moritz , on the other side of the country. But I am sure they do not leave disappointed. We have a beautiful abbey that is very famous that they are welcome to visit".

The IPKat wonders whether one town or city has ever sued another for unfair competition or passing off in respect of diversion of trade or tourism. He sagely notes that duplicated place names are a common phenomenon and he still recalls the probably apocryphal story of the Japanese city that renamed itself Sheffield so that it could imprint the legend "Made in Sheffield" on its steel products (click here and scroll down to Demented Dwarf).

The IPKat's postbag this weekend included an inspection copy of issue 2 of China Intellectual Property. Subtitled a 'Comprehensive IP Report on China', this attractively colourful and quite imposing periodical contains articles in both Chinese (left hand side) and English (on the right). This title is published out of Beijing by Hurrymedia.

Subjects featured in this issue include the fate of VIAGRA in China, problems relating to the protection of famous trade marks, Sino-EU cooperation in strengthening copyright protection, infringement liability for software end-users and an interview with Bradley Yu (Unitalen attorneys at Law).

The IPKat gives Hurrymedia full marks for the company's commendable enthusiasm and enterprise but adds that, if he were to shell out more than US$150 for an annual subscription, he would prefer a higher degree of attention on the part of the publisher to the finer points of English grammar and punctuation, to prevent the contents becoming a Chinese puzzle for English readers.

A report on the BBC suggests that the end may be in sight in the trade mark battle between Apple Corporation – the computer and iPod company and Apple Music, the Beatles’ record label. According to the report the two companies may be ready to settle, although they deny it. Part of the rumoured deal is that in return for a payment that would probably be upwards of $15million, Apple will have the exclusive right to offer Beatles music downloads for 6 months. The piece takes an unexpected turn though and condemns the fact that this is the third time die-hard Beatle fans will need to pay to get the same music – the first being on LP, the second on CD. The writer calls for the band to make their music available under a Creative Commons licence instead.

The IPKat can’t quite see the Beatles agreeing to the writer’s proposal. He thinks it’s a bit rum though that Apple appears to be getting a benefit for what could be wrongdoing by getting first refusal on the Beatles’ tracks.

Sunday, 26 September 2004

The October 2004 issue of Sweet & Maxwell's European Trade Mark Reports has now been published. It contains, among other cases, the texts of three judgments now made available in English:

* Deutsche Telekom AG v Mobilcom (Bundesgerichtshof, Germany): an action for infringement of a trade mark consisting of the colour magenta. In this decision the court reviews the proper scope of injunctive relief for infringement of such a mark.

* Berlag Aenne Burda GmbH & Co v Estonian Patent Office (Administrative Court of Tallinn, Estonia): where two trade marks include the word ANNA, but one is for goods and the other for services, can it be established that goods and services are actually similar to one another?

If you know of any recent European trade mark case that you would like to see reported in the ETMR, please tell the IPKat.

The BBC reports that a US judge has struck down anti-bootlegging legislation, dismissing charges against a Manhattan record dealer brought under the law. Judge Harold Baer Jr of New York has said that the law is invalid because, unlike standard copyright protection which is of finite duration, the law places no limit on the duration of the ban on bootlegging. RIAA has condemned the decision.

The IPKat isn’t sure about the judge’s ruling. Unlike an ordinary work that goes out of copyright, with a bootleg version, the copyright owner will not have had a chance to obtain his reward before the protection runs out. Why should a bootlegger ever be permitted to benefit from the fruits of his misdeeds, especially since he has deprived the copyright owner of an opportunity to benefit from the reward he would otherwise obtain.

Friday, 24 September 2004

Ever seeking something exciting to look forward to, the IPKat brings you news of some fresh IP activity in the European Court of Justice. Forthcoming attractions listed on the ECJ diary include the following:

* 28 September: Court of First Instance, Second Chamber -- There's a Hearing on Case T-57/03 SPAG v OHIM - Frank Dann and Andreas Becker, an appeal against an OHIM Board's very sensible and well-reasoned decision to allow registration of HOOLIGAN for clothes despite the existence of an earlier Spanish registration of OLLY GAN for the same goods. The same court is also having a Hearing on Case T-112/03 L'Oréal v OHIM - Revlon (FLEXI AIR). The diary notes, laconically, "The text is not available in English". Hmm!

* Wednesday 29 September: Court of First Instance, Third Chamber - There's a Hearing on Case T-334/03 Deutsche Post EURO EXPRESS v OHIM, (EUROPREMIUM). Apparently someone had the audacity to refuse an application to register the word EUROPREMIUM as a trade mark for certain goods and services in Classes 16, 20, 35 and 39.

* Also Wednesday 29 September: Court of First Instance, Third Chamber - There's a Hearing on Case T-33/03 Osotspa v OHIM - Distribution & Marketing (Hai), where the proprietor of the Community and national figurative mark "Shark" for goods in Classes 32 appeals against a decision to dismiss his opposition to registration of the "Hai" trade mark for goods in Classes 5, 32, 33, 35 and 42.

* Thursday 30 September: Court of First Instance, Fourth Chamber - There's a Hearing on Case T-126/03 Reckitt Benckiser (España) v OHIM - Aladin Gesellschaft für innovative mikrobiologische Systeme (ALADIN). This is an appeal against the refusal to allow an opposition to registration of the Community word mark ALADIN for certain goods in classes 1, 3, 35, 37 and 42.

* Thursday 7 October: European Court of Justice, Second Chamber -- Judgment is being given in Case C-136/02 P Mag Instrument vOHIM: the issue here is whether the pretty design of Mag torches is registrable as a trade mark - or do consumers just view the shape as a cute design that tells them about the torch, but not its origin?

Thursday, 23 September 2004

Yet another hard day at the office? Is your boss making you work late to work on yet another mega-zillion pound deal? Then this month’s IPKat patent of the month is for you! It’s a well-known fact that multi-tasking allows you to do more things in less time (or should that be the other way round?) and that’s exactly what the edible greeting card enables you to do. No longer do you need to slave away in your kitchen manufacturing the perfect birthday cake. Just slip one of these babies in the post and hey-presto, you’ll have done something which “combines the functions of an event-specific confection and a greeting card”.

Today the IPKat met Polish legal scholar Joanna Sitko, who is currently visiting London. Joanna, who teaches Intellectual Property Law in the Marie Curie-Sklodowska University, Lublin, is working on a doctoral thesis which compares the roles played by company names, trade names and trade marks in identifying companies and in protecting their trading interests. Poland apparently has a new law, which prohibits the assignment of company names. One can't help wondering if this law was passed for the benefit of the business community, or if it was something dreamed up by bureaucrats for bureaucrats ...

Anyone who shares Joanna's interests in this topic is welcome to contact her directly here.

The European Court of Justice has just delivered its eagerly-awaited decision this morning in Case C-107/03Procter & Gamble v OHIM (bar of soap) in French. This is so frustrating, since there wasn't even a published Advocate General's Opinion and now we have the judgment we aren't any wiser. As predicted by the IPKat yesterday, the ECJ has dismissed the applicant's appeal, presumably for the same reasons as the Court of First Instance did in December 2002 in Case T-63/01 (happily available in English here). If that's the case, the bar of soap isn't distinctive; people seeing it wouldn't think "wow, that's a trade mark" but "that's a piece of soap". And they'd be right.

The IPKat gathers that "pain de savon" is the French for "bar of soap". But the real "pain" is that of having to rely on the kindness of others to elucidate the subtleties of the ruling for him. Perhaps, as a gesture of compromise and reconciliation, the ECJ will render their next decision into Franglais.

WIPO reports that San Marino will become, on 14 December 2004, the 124th state to join the Patent Cooperation Treaty (PCT), the WIPO-administered system for obtaining large-scale international coverage following a single initial application.

The IPKat notes that just one patent has been granted in San Marino between the years 1999 and 2003, which suggests that the tiny country's PCT membership may not have a huge impact on the industrial world.

Who was San Marino? Click hereMore on San Marino here and hereThings San Marino is famous for here

Cedric Manara has emailed the IPKat to tell him that Larry Lessig will be at University College London on 4 October 2004 (details here). He’ll be speaking from 12-2pm and will be launching the UK version of the popular Creative Commons licence.

The IPKat would like to know why there’s a need for a separate UK licence. Does this mean that the US version is unsuitable for people based in the UK? If so, what happens to all those people in the jurisdiction who’ve adopted the original version of the licence?

Wednesday, 22 September 2004

This from The Register: Anti-software patent campaigners in the US have taken their fight to the courts. The Electronic Frontier Foundation (EFF), Public Knowledge and the Consumers Union have joined forces to file an amicus brief with the US Court of Appeals, asking for ambiguous patents to be declared invalid. The brief was filed in Phillips v. AWH Corporation, following a request from the appeals court for industry and public opinions on several issues of current patent law, the EFF said. This is the latest step in the EFF's campaign against broad software patents: in July the organisation drew up a top-ten list of the worst offending filings, saying it would work to see that all ten were overturned. Now it wants the courts to take a more stringent approach to awarding the patents in the first place.

"Aggressive patent holders are using vague patent language to cause havoc in the software and Internet fields",

said EFF legal eagle Jason Schultz.

"We're asking the court to rein in these claims by limiting their scope to only those things clearly laid out in the patent itself".

The Foundation for a Free Information Infrastructure (FFII) responded cautiously to the announcement. It welcomed the action, but emphasised its position that attacking bad patents is not the whole solution. A spokesman for the organisation told the Register:

"There are two things here. The first, the good point, is that it highlights to a wider audience just how bad some software patents are in the US. But our concern is that this kind of thing could give the impression that we only need to worry about bad patents, that if only patents were awarded according to the rules, properly examined and checked for prior art, everything would be OK. We don't believe that to be the case. We believe, more fundamentally, that the whole nature of patents on computer code is a mistake".

The EFF says that at the moment, US courts are interpreting vague terms in patents as broadly as possible, and will uphold a patent unless it is deemed too ambiguous. This means "improper patents of uncertain scope" are protected, giving plenty of work to legal departments, but stifling innovation and competition.

The IPKat looks forward to seeing good inventions properly patented and unmeritorious ones swept away. If only he could find the line between them ...

Tomorrow's the day the European Court of Justice gives its decision in C-107/03 P Procter & Gamble v Office for Harmonisation in the Internal Market, on P&G's appeal against OHIM's and the Court of First Instance's refusal(see Case T-63/01) to allow registration as a Community trade mark of a pretty mundane soap shape.

The IPKat's bet: the appeal will be upheld, citing the ECJ's own lengthening jurisprudence on distinctive character as applied to alleged 3D marks. To find out if he's right, visit this site tomorrow.

There's a free half-day conference in Geneva on Friday 7 October, to mark the accession of the European Union to the Madrid Protocol (you know, the deal that enables businesses to file multiple national and/or regional trade mark applications cheaply, easily AND without having to use French ...). There are some good speakers too, if the programme is anything to be believed.

Says the IPKat, I bet the official event will be a crashing bore because everyone is going to spend the afternoon being polite to everyone else and not saying what they really think. But I'd love to be where the real action is, in the coffee break and cocktail reception, listening to representatives of trade mark owners and applicants saying off the record the things they may not feel able to say on it ...

Trade marks without French here (at point 2e)
French without tears here, here and here

The BBC reports that a programmer has removed his accessible version of the data on the Odeon’s website after a letter from the cinema’s lawyer. Matthew Somerville found that it was impossible to use a screen-reader with the Odeon site when Explorer was used as a browser, so he used a scraper to remove the details of the Odeon’s films, times and booking system. He then posted the information on his personal website under the name “accessible Odeon”. The Odeon objected, pointing to its intellectual property rights.

It has been pointed out that, since the Odeon’s official site is not accessible to the blind, it may be in breach of the Disability Discrimination Act 1995. However, it’s not clear whether that Act applies to online content. Likewise, although the Copyright (Visually Impaired Persons) Act 2002 allows people with visual impairments to make accessible copies of printed materials, the situation for online content is not clear.

The IPKat adds that if accessible copies of commercial information are made, as well as reproducing copyright works, the maker is likely to be reproducing the trade marks of the undertaking to whom the information relates. The IPKat isn’t aware of any discussion of whether there is a need for a trade mark exception in the interests of the disabled, though such use may fall within the descriptive use defence.

Tuesday, 21 September 2004

A WIPO Press Release has announced the death last Sunday of the organisation's former Director General Árpád Bogsch. The press release records Dr Bogsch's formal achievements. He will be remembered by his friends as a warm and convivial leader and as a highly capable administrator, who vigorously encouraged the promotion of intellectual property rights and of international systems for their protection. Others may recall him as an autocratic and arbitrary empire-builder who sought to impose and retain a strict and rigid control of his organisation and its accounts. Whichever view you take, he was certainly a remarkable man who made a massive contribution to the shape of intellectual property law as we know it today.

The IPKat wants to know, what happens if I wrongfully use bullyboy tactics to persuade my competitors that they need to obtain a licence from me to use a symbol (X) even though legally they don't and, because of my efforts, the symbol acquires distinctiveness and consumers eventually view the mark as being my badge of origin. Does my misbehaviour earn me a valid trade mark registration?

Today's The Times law supplement carries an ad for a film production lawyer at Time Warner. You only need to be 1-3 years qualified for this one, so long as you (i) are experienced in media and entertainment law, (ii) have good contract skills, (iii) communicate well and are a good team player, (iv) are energetic and highly motivated and (v) have a proven track record for delivering quality work at speed. You'll be working with the team that handles Harry Potter, Charlie and the Chocolate Factory and Batman Begins.

The IPKat says if anyone with such remarkable talents exists, he or she should be able to name a juicy pay package.

* Following the savaging it received from the Advocate General in Case C-498/01 , Zapf Creations has wisely decided not to resist OHIM's appeal to the European Court of Justice against the Court of First Instance's bizarre decision to allow the registration as a Comunity trade mark of the words NEW BORN BABY for a doll that looked like a new born baby.

* Eurocermex is foolishly planning to appeal against the CFI's refusal, in Case T-399/02, to allow the registration of its three-dimensional green-lemon-wedged-in-top-of-bottle-containing-yellow-liquid mark (see IPKat, 24 August).

* Deutsche-SiSi is appealing against the CFI's refusal, in Cases T-146/02 to 153/02, to allow registration of the shape of drinks pouches as Community trade marks (see IPKat comment, 1 February). This apeal might be interesting, if the ECJ finds it necessary to explain why Deutsche SiSi's drinks container was unregistrable while that of Nestlé Waters France was found registrable in Case T-305/02.

The IPKat has recently received an interesting book from Cheltenham-based publishers Edward Elgar. Edited by Dina Kallay, it's called The Law and Economics of Antitrust and Intellectual Property: an Austrian Approach (contents here). A revised version of the author's SJD degree thesis at the University of Michigan Law School, this book makes for some pretty cerebral reading.

The IPKat has long believed that intellectual property and antitrust are the two poles between which competition policy oscillates. IP law creates monopolies and enhances market domination, while antitrust law destroys monopolies and prevents or regulates the extent to which market domination may be achieved. Both must be understood if either body of law is to be effective. Many practising lawyers believe that that the balance between the two can be achieved on an empirical basis, but economists prefer to set their interrelationship within a meaningful theoretical framework. That this book reads (to this lawyer) like a work of economics should not be taken as a criticism of it, but rather as an admission that it demands a greater degree of theoretical appreciation of economics than most lawyers possess. However, lawyer must speak to economist if there is to be any meaningful dialogue between the reasons for control and the means of achieving it -- and this book certainly aids that dialogue.

The Straits Times reports that McDonald’s has lost a trade mark battle in Singapore. The US fast-food chain was claiming that Future Enterprises’ use of 'MacNoodles', 'MacTea' and 'MacChocolate' was infringing its MCDONALD’S trade mark. However, the Court of Appeals found that the names, used together with an Eagle device, were not deceptively similar to the McDonald's MAC or MC prefix. McDonald’s claimed that Future Enterprises’ use was designed to take advantage of McDonald's reputation but Future Enterprise’s lawyer explained:

'There can be no likelihood of confusion or deception. The marks are different in appearance, sound and concept…Our marks are visually and aurally different. Our colour scheme, font and typeface are different.'

The IPKat would be interested to know what Future Enterprises’ explanation is for the use of the MAC component of his mark. He notes that the company’s lawyer is using a test for similar of marks that is identical to that used in the EU.

Monday, 20 September 2004

The IPKat has just received the first of three sample issues of Informa's ten-times-a-yearly magazine Copyright World, as an inducement to subscribe. Looking at the September 2004 issue, he notes the following contributions (among others):

* Practitioners' and manufacturers' perspectives on the UK Court of Appeal's recent Lambrettacase, which arguably has been pretty much superseded by the all-embracing legal protection conferred on designs by the new European laws on design protection;

* A good critique by Andrew Hobson (Reynolds Porter Chamberlain) of proposals from the European Commission to regulate copyright collecting societies more closely;

* A review by Bird & Bird's Katharine Stephens of the ECJ Advocate General's pro-database right utterances in Case C-203/02, the British Horseracing Board case.

The IPKat is sitting by his letterbox, in anticipation of his next free sample. What, he wonders, will it bring?

... there's another piece of subordinate trade mark legislation in the United Kingdom, the sexily-titled Trade Marks (International Registrations Designating the European Community, etc) Regulations 2004 No. 2332. This statutory instrument, as its name suggests, amends UK law to accommodate applications to register a Community trade mark via the Madrid Protocol. Madrid-based CTM applications may be made from 1 October 2004, the date on which most of the provisions of the new statutory instrument come into force.

One other things the SI does is to give the Patents County Court and other Chancery County Courts jurisdiction to deal with Community trade mark cases (the Department for Constitutional Affairs is planning to amend the law further, to let County Courts deal with other trade mark matters too).

The IPKat's glad that County Courts are at last being given jurisdiction to hear trade mark issues. There's nothing so magical about small trade mark disputes that requires them only to be heard before a specialist judge in a more expensive forum. Also, the IPKat suspects that more County Court litigation won't mean less High Court litigation: it will mean generally more dispute-oriented work across the board.

Current Patents County Court diary here; PCC rules here; what the PCC actually does here

Sunday, 19 September 2004

And here's another little gem from the European Court of Justice, this time from the Court of First Instance (CFI). In Case T-183/03Advanced Molecular Evolution Inc v OHIM, decided last Tuesday, the CFI ruled that the word mark ADVANCED MOLECULAR EVOLUTION was descriptive and non-distinctive in respect of the following Class 42 services:

No great shock there, you might think -- and you'd be right. A couple of highlights from an otherwise predictable decision:

* "The Court finds that there is no need to determine whether the whole of the relevant public needs to be conversant in English for professional purposes. In any event under Article 7(2) of Regulation No 40/94 it is sufficient to establish that since the sign in question is English the relevant public comprises knowledgeable English-speaking consumers" (para. 17).

* "... the Board is entitled to supply definitions of particular terms of its own motion without being bound to rely on specific documents, provided that the definition can be regarded as commonly accepted. In this case the definition, although contested by the applicant, was sufficiently commonplace not to have to be substantiated in the contested decision. OHIM was easily able in its reply to corroborate the definition with the simple aid of a dictionary and an encyclopaedia" (from para. 23).

The IPKat wishes that appeals to the CFI were based on some sort of legal merit, rather than on fact.

The BBC reports on the copyright conundrum of a local amateur dramatics group that ran into trouble with a West End production of One Flew Over the Cuckoo’s Nest. The am-dram group from Alrewas, Staffordshire was told to abandon its production since it might interfere with the London show, starring Hollywood actor Christian Slater. However, the group was determined that the show should go on since it had booked a theatre, started selling tickets and was about to send out publicity material. The company emailed the playwright, who promptly responded granting them performing rights. "The idea that we were seen as such a threat to a big West End show 120 miles away is unbelievable” said the director. The copyright agents have subsequently confirmed that the embargo on performances applies to London only.

The IPKat says that this goes to show how the copyright world is different from the normal world. In the normal world, limiting the provision of goods or services to a single undertaking could be seen as anticompetitive market division, but in the copyright world, this is perfectly OK. In fact, the copyright owner doesn’t have to grant the rights to any undertaking and allowing the Staffordshire group to perform the play is a non-mandatory concession on the part of the playwright.

When considering the distinctiveness of a compound trade mark, for example a sign made up of letters and numbers, the correct approach is to pretend that you are the relevant consumer of the goods or services for which the applicant seeks registration of the mark and then to consider the trade mark as a whole. There's nothing to be gained, therefore, from "salami-slicing" the sign up into its component parts and then ruling that each of those parts, by itself, is non-distinctive and then concluding that the whole mark can't be more distinctive than the sum of its parts. That's the moral of the European Court of Justice (ECJ) ruling last Thursday in Case 329/02SAT.1 Satellitenfernsehen GmbH v OHIM.

The applicant's mark in this case, SAT.2, was sought for satellite and satellite broadcasting services. OHIM and the Court of First Instance (CFI) refused registration on the basis that "Sat" was short for satellite, "2" was a number used in the presentation of such services and ".", being just a punctuation mark, had no distinctive character at all. The ECJ disagreed, emphasising that

* there is no presumption that elements which are individually devoid of distinctive character cannot, on being combined, be perceived by the relevant consumer as being distinctive.

* there is no specific level of linguistic or artistic creativity or imaginativeness that must be shown before a trade mark can be registered. It's enough for a mark to enable the relevant public to identify the origin of the goods or services and to distinguish them from those of other undertakings.

* the frequent use of trade marks consisting of a word and a number in the telecommunications sector showed that such a combination cannot be considered to be devoid, in principle, of distinctive character.

The IPKat is thrilled with this decision, reminding readers that the CFI's judgment was vigorously criticised by Jeremy Phillips in his book, Trade Mark Law: a Practical Anatomy, published last year by Oxford University Press.

If you have a common surname like Smith or Jones, can you register it as a trade mark or (i) is it to be regarded as lacking in distinctive character under Article 3(1)(b) of Directive 89/104 or (ii) should your surname be kept off the trade mark register so that other people with the same name can use their name too without threat of trade mark infringement? The European Court of Justice has now given its ruling on these questions in Case C-404/02Nichols plc v Registrar of Trade Marks.

What the ECJ says is basically that common surnames are to be examined exactly the same way as any other prospective trade marks. In particular:

* Stricter general criteria of assessment based on (i) a predetermined number of persons with the same name, above which that name may be regarded as devoid of distinctive character, (ii) the number of undertakings providing products or services of the type covered by the application for registration or (iii) the prevalence or otherwise of the use of surnames in the relevant trade cannot be applied to such trade marks.

* The registration of a surname as a trade mark cannot be refused in order to ensure that no advantage is afforded to the first applicant who wants to use that name.

* Article 6(1)(a) of Directive 89/104 permits a person to make honest use of his name if it is identical or similar to a registered mark . Honest use cannot therefore be taken into account for the purposes of the assessment of the distinctive character of an applied-for trade mark.

The IPKat thinks this decision is quite correct. The ECJ's decision is consistent with earlier decisions in which it emphasised that three-dimensional product shapes are also to be judged by the same criteria of distinctiveness as any other mark.

On 13 September the IPKat lamented the fact that some rather nice intellectual property blogs have become defunct. John L. Welch (Foley Hoag LLP) has just sent us news of another one: Joseph F. Gusmano's Trademark Project.

The IPKat sends his thanks to Cedric Manara for drawing his attention to two other French-language IP blogs that are fully functioning. One is the Little Trademark Museum of Frédéric Glaize (who also notified the IPKat of his blog's existence); the other is Cedric's own Domain Name Blog.

STOP PRESS: While we're on the subject of French IP blogs, if you speak French, you may want to take a look at Jean-Baptiste Soufron's weblog.

The IPKat notes that it's a big day for trade mark decisions tomorrow, with the ECJ providing its judgments in SAT1 and Nichols. The IPKat will provide you with comments and analysis on these two important cases early next week (after the Jewish New Year).

The Kingdom of Bhutan has become a member of the Berne Union, according to a WIPO press release. The Berne Union is the body of countries signatory to the Berne Convention, the premier international treaty for the protection of authors' rights.

SKB, an English company, appealed from the dismissal of its application for a stay of the proceedings brought by DSM, Dutch and Swedish companies that sold and made ingredients for pharmaceutical products. SKB also manufactured ingredients for pharmaceutical products. SKB and DSM both developed strains of a bacterium used in the manufacture of an antibiotic. In 1996 SKB, concluding that DSM was infringing its patent on a strain of bacterium called SC7, sued DSM in the Netherlands for patent infringement.

In 1997 the parties entered into an agreement to settle those proceedings. This agreement, in which SKB reserved its rights in respect of the US, covered both patent infringement and misuse of confidential information. Clause 15 conferred exclusive jurisdiction on the English courts with respect to all disputes "in connection with" the agreement. In 2002 companies in the SKB group commenced US proceedings, alleging wrongful use of SC7, in which DSM were joined as defendants to those proceedings. DSM challenged the jurisdiction of the US court and issued proceedings in England, relying on provisions of the settlement agreement. DSM sought declarations that it was not wrongly using SC7 and that the US proceedings had been brought in breach of clause 15 of the settlement agreement.

SKB sought a stay of the English proceedings on forum grounds. The trial judge held that the exclusive jurisdiction clause applied to the subject matter of the dispute in the US proceedings so far as it affected DSM and that, under Council Regulation 44/2001 Art.2, he had no jurisdiction to stay the proceedings against SKB on forum grounds. He declined a stay under the court's case management powers on the ground that there was no good reason not to uphold the jurisdiction clause. SKB submitted that the judge had erred (i) in concluding that the subject matter of the US proceedings was covered by the jurisdiction agreement, (ii) in giving insufficient weight to DSM's delay in bringing the English proceedings and (iii) in giving insufficient weight to the risk of the trial courts in different jurisdictions giving inconsistent decisions.The Court of Appeal dismissed the appeal.

1. The judge was right to hold that the English proceedings were to litigate disputes or a dispute "in connection with" the settlement agreement. The central issue was whether DSM had been using its own strain of the bacterium (to which SKB could not object) or whether it was wrongly using SC7.

2. The words "in connection with" had a wide meaning and English courts normally gave them a generous interpretation.

3. The agreement covered alleged patent infringement and misuse of confidential information. Where a dispute arose as to whether DSM was using its own strain or SC7, the parties agreed that it should be litigated in England. Any such dispute was connected with the agreement because the agreement prevented SKB from objecting to the use of DSM's own strain.

4. The fact that the agreement reserved SKB's rights in the US did not entitle SKB to have the issue of whether DSM had been using SC7 determined in the US contrary to clause 15. DSM were thus exercising their contractual right to bring proceedings in England.

5. The judge had not erred in principle in rejecting the alleged prejudice to SKB from the delay in bringing proceedings as a weighty factor in the exercise of his discretion. DSM was served with the US proceedings in September 2003, objected to the jurisdiction in October of that year and commenced the English proceedings in December.

6. On the facts the possibility of the US and English proceedings producing results that might be inconsistent was remote.

The IPKat thinks this decision is absolutely right. Any other result would make businesses wonder how tightly they could ever draft a dispute settlement agreement without seeing their apparent intentions destroyed.

Monday, 13 September 2004

Fidelma Macken, Ireland's judge in the European Court of Justice and a former practitioner in intellectual property law, will be replaced later this year in the ECJ by Mr Justice Aindrias O'Caoimh of the Irish High Court. Mr Justice O'Caoimh is a vice-president of the Irish Society for European Law.

The IPKat wishes Fidelma, who has been actively and enthusiastically involved in the ECJ's trade mark cases (she was rapporteur in the recent Procter & Gamble detergent tablet cases, here and here), every success on her return to the Irish High Court.

The IPKat has visited many other interesting websites and blogs in the course of his quest for exciting tidbits of intellectual property information to share with his readers. Some of these sites continue to blossom, while others just wither on the vine. Can anyone tell the IPKat whatever happened to

* The Patent Blog and the Copyright Blog: Nothing has been heard of the Patent Blog since 8 October 2003, or of the Copyright Blog since Wednesday 18 February 2004. Both were run by The Intellect Law Group, a small Florida-based law firm.

* Sans Blog: the first dedicated French-language IP blog, this was launched by IP Twins, but hasn't been live since 9 October 2003.

*WordSpy: a wonderful site that features new uses of words and neologisms (including many uses of trade marks and business names), but nothing has been added to it since 13 June 2004.

The IPKat is a curious cat and he'd love to know the following things: (i) have these blogs/websites been abandoned completely or are they just in hibernation? (ii) if they have been abandoned, is anyone else interested in taking them over? Please tell ...

Sunday, 12 September 2004

The Guardian reports that Disney may have to sell its South African Mickey Mouse trade mark. Disney is currently engaged in a court battle with the relatives of Solomon Linda, the original composer of “The Lion Sleeps Tonight”. Disney used the song in both the film and the stage play of The Lion King, and now the composer’s family is claiming $1.6m in royalties. Though Linda sold the copyright in the song in 1939, his heirs are claiming that it should have reverted back to them 25 years back to his death in 1962. A court in Pretoria has said that, should the family win, over 240 trade marks owned by Disney, including Mickey Mouse, could be used to pay the family.

The IPKat finds this a bit worrying. Surely the Mickey Mouse trade mark is so well known that its use by anyone other than Disney will seriously confuse consumers.

Friday, 10 September 2004

Would you like to work in Alicante? Do you enjoy an unmitigated diet of ssea food, 360 days of sunshine a year and the company of trade mark enthusiasts? If so, perhaps you have what it takes to be the Chairman of one of the Boards of Appeal of OHIM (the Office for Harmonisation in the Internal Market). OHIM is currently looking for three new BOA chairmen: the public-minded IPKat brings you the selection details here.

If the excitement of being a Chairman is just too great for you, you can settle for making up the numbers as a BOA reservist. Details here.

The IPKat attended the first of three Copy-art.net talks in the Digital Studio of the Institute of Contemporary Arts last night. The speaker, Irini-Mirena Papadimitriou, is Curator of the copyright-free artwork on Copy-art.net's website. She is effectively also the guardian of a precious patch of online space in which artists and site visitors can communicate, interact and inspire each other. Artists who have contributed their work to this experiment include Reza Aramesh, Miltos Manetos and Carey Young (whose contribution is a collection of anonymous photographs which he found in a box and handed over for free downloading). The IPKat was quite impressed with the possibilities for dialogue and interaction which Copy-art.net, supported by the Arts Council, can provide. He feels however that Copy-art.net's attitude towards copyright is ambivalent, to say the least. the site's promotional material states that

"Submitted works can be downloaded, changed, distributed, exhibited and used by all visitors for free".

However,

"Only commercial use is excluded, as all works are registered with Creative Commons under a non-commercial license".

Since it is generally commercial use of the work of others that leads artists and designers into threats of unwanted litigation, and most non-commercial copyright is likely to be undetected, the exclusion of commercial use is disappointing. What's more, it can hardly be said that a copyright-free site that bars visitors from making use of the works displayed for commercial purposes

"intends to challenge the idea of intellectual property and test its limits in a copyright-free zone".

Having said all that, the discussion that followed Irini-Mirena's introductory comments was lively, interesting and unusually well-informed. Those attending included artists, copyright lawyers, intellectual property researchers and even a sociologist; the discussion was never too technical for participants to plunge in and either ask their questions or state their credos.

Subjects discussed with varying degrees of passion included (i) whether Creative Commons was a threat to the copyright establishment or merely a device to paper over its cracks; (ii) whether Creative Commons was primarily of legal significance or whether it was an economic device for reducing the transactional costs of finding out if you were about to infringe someone else's copyright or not; (iii) what part could be played by Digital Rights Management (DRM) systems in either integrating Creative Commons into regular internet use or in suppressing access to information and (iv) whether artists were indeed badly treated by the existing copyright legal regime.

Two more talks will be hosted by Copy-art.net at the ICA before its exhibition finishes on 3 October. They are given by

Thursday, 9 September 2004

It sounds like a trade mark owner’s paradise. The BBC reports that the Advert Channel has been launched, showing back-to-back adverts and nothing else. Much of its programming is made up of classic ads and amusing foreign advertisements. However, there’s a sting in the tail – none of the ads are paid for by the advertisers. Instead, the channel makes its money by phone-in competitions and downloads of ringtones features tunes from classic ads.

The IPKat wonders whether a channel filled completely with “real” adverts would work. People might tune in for the amusement value but he thinks the message of any one advert would get lost among the non-stop noise from all the other adverts.

Wednesday, 8 September 2004

Advocate General Ruiz-Jarabo Colomer of the European Court of Justice has delivered his Opinion in Cases 207/03 (Novartis and UCL and 253/03 (Millennium Pharmaceuticals Inc) on the term of validity of suppmentary protection certificates (SPCs) that extend protection for pharmaceutical and agrochemical products past the expiry date of any patent granted for them, to compensate for time lost in trialling products before they can be marketed under their patent. The duration of SPCs in the European Economic Area (EEA) is calculated by reference to the date on which the patented product, having been tried and tested, receives its first market authorisation in the EEA.

The question for the ECJ to consider is what happens where the first market authorisation is granted by Switzerland -- which lies outside the EEA -- given that Swiss market authorisations are automatically extended to the tiny Duchy of Liechtenstein, which lies inside it?

In para.76 of his Opinion Advocate General Jarabo has advised the ECJ to rule that

"(1) Under Article 13 of Council Regulation 1768/92, marketing authorisations issued in Switzerland which, in the framework of the customs union with Liechtenstein, are automatically effective in Liechtenstein, constitute a ‘first authorisation to place the product on the market in the Community’.

(2) The authorities of the EEA States are obliged to correct the dates by reference to which the duration of the supplementary protection certificates is determined where, when the dates were set, an error was made, provided that, under the relevant national legal system, the decision is amenable to review".

This appears to the IPKat to be an Opinion based on the practical realities of economic life in the EEA rather on technical legal niceties. He suspects that the ECJ will adopt it.

The IPKat has received an email telling him about a new exhibition at the Institute of Contemporary Arts in London that may be of interest to IP lawyers and enthusiasts. The exhibition features work from a range of artists who have contributed to copy-art.net. The organisers say:

Copy-art.net is a copyright-free website, a curatorial project that aims to create an online platform to exchange works between artists, curators and the public and give the audience free access to works of art. This project intends to challenge the idea of intellectual property and test its limits in a copyright-free zone. Submitted works can be downloaded, changed, distributed, exhibited and used by all visitors for free. All submitted works will be present online in an archive, and available to the public to access. Only commercial use is excluded, as all works are registered with Creative Commons under a non-commercial licence.

There is also a talk to accompany the exhibition, given by the founder and curator of copy-art.net which is taking place this Thursday at 6.30pm at the ICA.

Although the IPKat likes the idea of free access to art works in theory, he’s not sure how in practice such a scheme can incentivise all but the most altruistic artists to produce art. However, he’s all for the idea of setting up an experiment to see how such a scheme works and he’s willing to have his conceptions on this issue challenged by the right evidence.

Tuesday, 7 September 2004

Intellectual property specialist chambers 19 Old Buildings have announced their forthcoming merger, on 1 October 2004, with Hogarth Chambers. The merged set, some 30 members strong, will operate both from 5 New Square and from the annexe at 19 Old Buildings.

The IPKat wonders whether this fine example of consolidation of intellectual property expertise at the English Bar will trigger further mergers of IP sets that wish to achieve greater economies of scale as well as a wider spread of competency within that field.

The Times today carries an advertisement for a trade mark attorney for a City (London) practice. The salary is £60,000+, though the ad doesn't say what the + might be. The position is open even to newly-qualified trade mark attorneys, so long as they are "self-starters". Details here.

Yesterday this blog mentioned that Case T-311/02 Lissotschenko v OHIM had finally been translated into English. This was an appeal by the Community trade mark applicants against the refusal of OHIM to allow the registration of the word mark LIMO for various laser- and light-related products in Classes 9, 10 and 11 of the Nice Classification. Both the examiner and the Board of Appeal found that in electronics the combination of letters ‘LIMOS’ is used as an abbreviation for ‘Laser Intensity Modulation System’: the applicants' LIMO mark was thus basically just a sawn-off acronym. The applicants maintained that the word was distinctive and appealed to the Court of First Instance (CFI).

The CFI dismissed the appeal. Said the court:

"The fact that the sign LIMO is not usually used in specialist circles as an abbreviation for the expression ‘Laser Intensity Modulation’ is not sufficient to conclude automatically that it is not descriptive. For OHIM to refuse to register a trade mark under Article 7(1)(c) of Regulation No 40/94 it is not necessary that the signs and indications composing the mark that are referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes" (para.32).

The Court added:

"Given that all the products covered by Classes 9 and 10 are intended for specialist consumers likely to know the sign LIMOS as an abbreviation for ‘Laser Intensity Modulation System’ in the field of those goods, and may be incorporated in such a system, it must be held that, in the absence of any evidence to the contrary from the applicants, the sign is descriptive of one of the possible intended purposes of the goods at issue which the relevant public is liable to take into account when making a choice and which accordingly constitutes an essential characteristic thereof" (para.41).

Finally:

"it is sufficient to point out that registration of a word sign must be refused, pursuant to Article 7(1)(c) of Regulation No 40/94, if at least one of its possible meanings identifies a feature of the goods or services concerned" (para.47).

The IPKat reminds the applicants that they should be consoled by the fact that they can still gain registration by acquiring distinctiveness through use. Since there was no suggestion that anyone else in the trade either used LIMO as a trade mark or understood it specifically as having a technical meaning, that should not be too difficult an end to achieve.

Here’s a summer Court of First Instance (CFI) order for all you procedure-junkies out there. Kerry applied to register a CTM in 1997. Gerolsteiner opposed the application in 1998 but its opposition was rejected by the OHIM Opoosition Division in 2002 and subsequently by the Board of Appeal in January 2003. In February 2003 Gerolsteiner appealed to the CFI. However, in December 2003, Gerolsteiner informed the CFI that it had transferred the trade mark on which the opposition was based to Sinziger Mineralbrunnen and that Sinziger Mineralbrunnen wished to be substituted for Gerolsteiner in the dispute before the CFI. OHIM, Kerry and Gerolsteiner were consulted. None of them had objections to the substitution taking place.

The CFI authorised the substitution of Sinziger for Gerolsteiner:

*Where an intellectual property right which is the subject of a dispute is transferred, the new owner, claiming through the original owner which is party to the dispute, may be authorised by the CFI to have itself substituted for the original owner. However, this substitution can only take place where the original owner of the IP right has no objection and the CFI, after hearing the other parties to the dispute, considers that the substitution is appropriate.

*Since there is no provision in the Statute of the Court of Justice or the Rules of Procedure of the Court of First Instance expressly governing the substitution of one party for another, the provisions of Arts.115 and 116 of the CTM Regulation apply by analogy. This means in particular that the party new owner of the IP right must accept the dispute in the state that it is in at the time of the substitution.

*Here the original owner of the IP right, Gerolsteiner Brunnen, declared its agreement with the substitution and neither OHIM nor the intervener (Kerry, the applicant for the CTM that Gerolsteiner was opposing) had raised any objections. Therefore the substitution was authorised.

The IPKat says that this way of doing things makes sense. If all the parties to the dispute agree, then it seems that no one loses out by the CFI allowing the substation.

Monday, 6 September 2004

It's back to work for the European Court of Justice and the Court of First Instance and here's the agenda for the next fortnight. Big events for IP enthusiasts include

* Tomorrow, Tuesday 7 September: Opinions C-207/03 Novartis and Others and C-252/03 Millenium Pharmaceuticals (Advocate General Ruiz-Jarabo Colomer advises the ECJ on applications for a preliminary ruling on the term of supplementary protection certificates for medicinal products which are first marketed in Switzerland before they hit the market in the EEA).

* Thursday, 16 September: Judgment C-329/02 P SAT.1 SatellitenFernsehen v Office for Harmonisation in the Internal Market (the result of an appeal against the CFI's "salami-slicing" approach, when refusing to allow the registration of the word mark SAT.2 for satellite services on the ground that it was not distinctive).

* Also on Thursday, 16 September: Judgment C-404/02 Nichols (ruling on a preliminary reference on the registrability of common surnames as trade marks).

* Tuesday, 14 September: Judgment T-183/03 of the Court of First Instance in Applied Molecular Evolution v OHIM (an appeal against the refusal to register as a Community trade mark the words APPLIED MOLECULAR EVOLUTION).

The IPKat notes that there are plenty of hearings on IP-related cases too, thus guaranteeing that the current flood of IP Euro-litigation through the courts of Luxembourg is unlikely to dry up in the near future.

... the European Court of Justice surprised the IPKat by posting a handful of goodies on its website. These recent gems include

* Case T-131/03Gerolsteiner Brunnen GmbH v OHIM (this case is unrelated to the famous ECJ decision, Case C-100/02Gerolsteiner Brunnen GmbH v Putsch GmbH, even though they both concern the GERI/KERRY SPRING trade marks: it deals with the substitution of the name of a new opponent, Sinziger Mineralbrunnen, for that of Gerolsteiner).

* The interim order of the President of the Court of First Instance in Case T-201/04 R, Microsoft Corp v The Commission (a complex proceeding which illustrates perfectly the nightmare nature of any action to bring copyright- and patent-rich Microsoft to heel for alleged abuse of a dominant position).

The IPKat hopes that he will be able to blog at least one of these cases shortly. He regrets, however, that he can bring no further news of Case T-115/03, Samar SpA v OHIM (application to register GAS STATION as a Community trade mark for clothes; opposition by owner of earlier BLUE JEANS GAS) because it still hasn't been translated into English. It has however been translated into Lithuanian, which is a great comfort to all English-speaking trade mark practitioners.

Anna Carboni of Wilberforce Chambers has kindly provided the IPKat with a copy of the OHIM Cancellation DivisionÃ¢Â€Â™s decision invalidating Lego's registration of the shape of its Lego bricks as a Community trade mark. In doing so, the Cancellation Division applied the ECJÃ¢Â€Â™s Philips v Remingtondecision, making a number of novel and/or interesting points, including:

* Ã¢Â€ÂœThere is no rule in Community trade mark law that bars anything that has been patented or could have been patented from CTM registration. Rather, the general principle is that one and the same product or item can be protected by various industrial property rights, provided that the conditions for each of those rights are fulfilled individuallyÃ¢Â€Â.

* The Cancellation Division split the ground for the refusal of registration under Art.7(e)(ii) of Regulation 40/94 into 2 questions: (i) is the shape of the goods necessary to obtain a result? (ii) is the result that is obtained of a technical nature? The term Ã¢Â€ÂœtechnicalÃ¢Â€Â for these purposes must be interpreted in the same way as it is interpreted in patent law, which cuts down on the risk of an overlap between patent and trade mark protection.

* Regarding the first question the Cancellation Division stated Ã¢Â€ÂœThe question is not whether the design of the item is functional, but whether the function of an item is actually performed by the shape [i.e. the shape for which registration is applied, rather than by some other feature of the product in question]Ã¢Â€Â.

* Where a 3-D shape contains elements that are precluded from registration under Art.7(1)(e)(iii), such objections can only be overcome if the mark comprises other elements that are distinctive on their own.

* Acquired distinctiveness cannot overcome an objection under Art.7(1)(e) since the public interest protected by that article, which is to enable competitors to access the same technical solution has nothing to with distinctiveness. (The IPKat is somewhat puzzled by this point, because the need to keep certain marks free for other traders is said to be what is protected by Art.7(1)(c) (descriptiveness) yet there has been no suggestion that objections under that article cannot be overcome by acquired distinctiveness).

The IPKat notes that it is actually rather rare for Philips v Remington to be applied since many companies prefer to argue that functional shapes lack distinctiveness. The reason for this is often that proving that a mark is unregistrable under Art.7(1)(e) is tricky and technical, as this case demonstrates.

Sunday, 5 September 2004

Ananova reports that British athlete Paula Radcliffe has been dropped from an advertising campaign for porridge because she doesn't fit the advertising slogan. The 30-year-old Olympic athlete, who was intended to sign the contract once she returned from Athens, was due to shoot a TV commercial for Quaker's Oatso Simple porridge this week, showing her winning a marathon after eating the cereal. The advertising slogan was to read: "It helps you go the distance." Quaker has however pulled out, after Radcliffe's poor showing at the Athens Olympics where she failed to finish both the marathon and the 10,000m. Radcliffe had been seen as the perfect celebrity to promote the cereal as she says porridge is her favourite pre-race meal.
A source linked to Quaker said:

"Although a contract was not in place, the whole advert had been verbally agreed between Paula's agent and Quaker, although it was made clear that it would only go ahead if Paula won the medal”.

But agent Sian Masterson said the idea was scrapped because Quaker couldn't get the script approved by the Broadcast Advertising Clearance Centre, which pre-vets commercials, because it contravened regulations.

The IPKat is sceptical of Sian Masterson’s statement and sympathises with Paula Radcliffe on the loss of a potentially lucrative product endorsement package. But never mind: here’s a tip. Win your next big race, Paula, then endorse any breakfast cereal that’s not porridge, using the slogan “I used to eat porridge, but now I’m a winner!”.

Friday, 3 September 2004

The IPKat has received an email announcing the establishment of Own-It, a body designed to “deliver seminars, online and face-to-face advice to ensure creative professionals understand how to exploit and protect their ideas”. Own-It’s website will be going live on 15 September. The body is funded by Creative London, which will run it with the help of a series of partners. It will also be running a series of free events aimed at those in the creative industries this September and October, the programme for which can be found here.

According to The Register UK-based charity Oxfam which has released a "Songs for Sudan" compilation album in support of aid efforts in that country's devastated Darfur region. "Songs for Sudan" is available by download only and exclusively from Oxfam's bigmusic.com. It features 18 tracks from such notable performers as Ash, REM, Badly Drawn Boy, Jet, Faithless and David Gray. The download costs £7.99, of which £5 goes directly to Oxfam. If you want to give but don't like the music, you can make a direct donation to Oxfam's Sudan Crisis appeal at the charity's website. A radio report from the BBC this morning said that the participating artists were waiving their entitlement to royalties.

The IPKat is impressed at the manner in which the new electronic technologies can be brought so speedily to bear in times of crisis such as this one. He also applauds all ways of generating cash for the Darfur region but, like all other cats, he's very curious. In particular, he wonders ...

* what happens to the £2.99 per download that isn't going directly to Oxfam?

* how much of the £5 that goes to Oxfam will end up in Darfur?

* if copyright in the album is infringed, what measure of damages might Oxfam be able to claim?

* On 28 August IAM editor Joff Wild responded to John's criticisms, pressing strongly for Europe to adopt a far more pro-IP position if it were to stand a chance of competing realistically with the IP-positive regime of the United States.

* John Cahir delivered a fierce defence of his position in the face of Joff's attack.Today we post Joff's response in full.

Joff says as follows:

Basically, I think we agree on what we have been debating. If we move forwards, however, what I believe needs to be addressed is how to change the situation in which Europe finds itself. It is too easy for the IP fraternity to blame the Commission and politicians in general for the mess that we have on our hands in areas such as the Community patent, the appointment of the president of the EPO and the technology transfer block exemption. When it comes down to it, I believe that IP owners here have to take the lion's share of the responsibility if Europe lags behind the US in creating a world class IP infrastructure. This is because they have failed to make the case for intellectual property. They have failed to demonstrate the link between IP and economic prosperity and they have failed to counter the arguments of those who have an anti-IP agenda. Politicians tend to listen to those who make the biggest noise. That's why Prime Ministers and Presidents discuss European farming and fishing issues, while junior trade ministers and patent and trade mark officers handle IP. Is it any coincidence that the big international IP issue for Europe at the moment seems to be, as you say, more protection for labels of origin?

Until European IP owners decide that they have to invest time and resource into pushing their case - something that their equivalents in the US have been doing for many years (Bayh Dole, for example, got through Congress in the face of huge, high-level opposition and thanks in large part to protracted, time intensive lobbying from university technology officers) - I think it is inconceivable that there will be any meaningful progress towards creating the IP infrastructure we so clearly lack on this side of the Atlantic. Politicians, the media and the public need education. They need a clear understanding of exactly what the issues are and what is at stake, and they need it all in language that is easy to understand. If this does not happen, I think that there is a major risk that exisiting rights will start to roll back as the stage will be open to those who have an anti-IP agenda to make hay. They are being successful already because they have managed to equate IP with big (American) multi-nationals, the type of business that instantly causes many in Europe to recoil with horror. Of course, we know that is ridiculous and that thousands of European SMEs depend on IP for their survival. But who is making that case? This is where I think Simon Gentry has a point and that is why, despite sometimes not necessarily being right in the details, what he is doing deserves publicity. If he got some more support and help, it might allow him to develop more coherent arguments that can stand up to real scrutiny.

Europe is crying out for its own AIPLA or IPO. It needs industry to get much more involved in organisations such as the LES. The current state of affairs suits many - private practice lawyers and attorneys, patent and trade mark office people and, dare I say it, academics - but it is not helping IP owners one little bit.

The IPKat really appreciates the time that Simon, John, Joff and Alex have spent debating this issue. Thanks, all of you.

IPKat Policies

This page summarises the IPKat policies on guest submissions and comments. If you have posted a comment to one of our blogposts and it hasn't appeared, it may be because it doesn't match our criteria for moderation. To learn more about our guest submissions, comments and complaints policy and the procedure for lodging a complaint click here.

Has the Kat got your tongue?

Just click the magic box below and get this page translated into a bewildering selection of languages!